WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pi-Design and Bodum AG v. D. Doreus, Fortac-In
Case No. D2016-1887
1. The Parties
The Complainants are Pi-Design and Bodum AG, both of Triengen, Switzerland, represented by Schreiber, Hahn, Sommerlad, Rechtsanwälte, Germany.
The Respondent is D. Doreus, Fortac-In of Arnhem, the Netherlands, internally-represented.
2. The Domain Names and Registrar
The disputed domain names <bodum.coffee>, <bodum.cooking>, <bodum.kitchen> and <bodum.store> are registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2016. On September 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2016. The Response was filed with the Center on October 11, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on October 18, 2016 The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainants submitted their Supplemental Filing on October 19, 2016.
4. Factual Background
The Complainant Pi-Design AG (hereinafter, "the first Complainant") is the owner of intellectual property rights of companies belonging to the Bodum group and the registered holder of the trademark BODUM.
Amongst others, the first Complainant owns the following valid trademark registrations:
- European Union Trademark No. 000224097 for BODUM (word mark), registered on August 20, 1998 in classes 3, 8, 11, 14, 20, 21, 24 and 30;
- European Union Trademark No. 005495221 for BODUM (figurative mark), registered on October 3, 2009 in classes 7, 8, 11, 21, 30 and 35;
- International Trademark No. 573619 for BODUM (word mark), registered on July 9, 1991, in classes 8, 11, 14, 18, 20, 21, 24, 25 and 30; and
- International Trademark No. 908026 for BODUM (word mark), registered on October 6, 2005, in classes 1, 3, 4, 6, 7, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 29, 30, 33, 35, 42 and 43.
The first Complainant is also the owner of the domain name <bodum.com>, registered on December 17, 1996.
The Complainant Bodum AG (hereinafter, "the second Complainant") develops, manufactures and sells household products. The BODUM products are available for sale around the world via retailers, distributors, in BODUM shops and over the Internet.
The Complainants operate an online shop at "www.bodum.com" in various languages, including Dutch, English, French, German, Japanese, Russian, and Spanish.
The disputed domain names were registered on the following dates:
<bodum.coffee> on April 09, 2014;
<bodum.store> on July 1, 2016;
<bodum.kitchen> on September 08, 2014; and
<bodum.cooking> on September 22, 2014.
According to the correspondence on record, on July 12, 2016, a company called Virtual Estate Branding sent a letter (the "July Letter") to the second Complainant, on behalf of another company called Stichting Taxaceae (which was listed as registrant of the disputed domain names at that time), informing that the disputed domain names were registered in the name of Stichting Taxaceae, which was defined as "a foundation that exploits several activities and is currently in an advanced stage of preparations with regard to the exploitation of products with a specific focus on several consumer markets". The sender also invited the second Complainant to contact it for "any questions about the registrations".
In reply, on July 18, 2016, the authorized representative of the Complainants sent a cease-and-desist letter to Virtual Estate Branding requesting that the registrant transfer the disputed domain names to the Complainants.
As indicated in the Complaint, at the end of August 2016, the registrant name and email address indicated in the WhoIs information of the disputed domain names were changed to the ones currently displayed in the Registrar's database, although the registrant's mailing address and telephone number have remained unvaried.
According to the records, the disputed domain names were pointed, before the notification of the Complaint, to a parking page of the registrar Hostnet. When the Panelist drafted the present decision, the disputed domain names were pointed to web sites under construction displaying a logo consisting of the term "bodum" along with an enclosed R (®) indicating a registered trademark. The home page displays the statements "peinture pour équipement médical" ("paint for medical equipment") and "Nous livrons uniquement à des clients en Haïti" ("we deliver only to clients in Haiti"). Under the sections "Produits" ("Products") and "Services", the coordinates of a bank account in Haiti are displayed, while in the page named "Conditions générales de vente" ("General conditions of sale"), the Respondent is identified as the seller of the products promoted on the web sites.
5. Parties' Contentions
The Complainants state that they have a common grievance against the Respondent, because they have a common legal interest in the BODUM trademarks, and both entities are affected by the Respondent's conduct. Moreover, the first Complainant has granted the second Complainant exclusive, worldwide rights in its BODUM trademark. The Complainants state that they have rights in the trademark BODUM based on various trademark registrations and their continuous and extensive use of the trademark to conduct their activities, for an ever‑increasing range of goods. The Complainants also assert that the trade name Bodum is protected worldwide according to Article 8 of the Paris Convention for the Protection of Industrial Property.
The Complainants contend that the disputed domain names are identical to the Complainants' trademarks and trade name, as the disputed domain names include the trademark and trade name BODUM in its entirety with no additional elements, while the applicable generic Top-Level Domains ("gTLDs") are usually disregarded.
The Complainants further claim that, in the present case, the selection of the gTLDs ".kitchen", ".store", ".coffee" and ".cooking" reinforces the confusing similarity with the Complainants' trademarks and trade name as they refer to the Complainants' core products for which the Complainants' trademarks have been registered.
The Complainants point out that the Respondent has no rights or legitimate interests in the disputed domain names since: i) the Respondent is not a reseller or distributor for Complainants' products and has not otherwise been permitted by the Complainants to make any use of their trademarks; ii) the Respondent cannot conceivably assert that it is commonly known by the term "Bodum" in connection with BODUM products; and iii) the Respondent is not using nor has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, since the disputed domain names are pointed to a registrar page.
With reference to the bad faith requirement, the Complainants state that the Respondent must have had actual and constructive knowledge of the Complainants and their rights at the time of registration of the disputed domain names, since the Complainants' trademarks are registered and widely known also in the Respondent's country and the Complainants have a widespread reputation in the trademarks BODUM with regard to household products. Therefore, the Complainants assert that it is most unlikely that the Respondent just happened to unintentionally select the Complainants' distinctive trademarks and trade name and inadvertently put them in combination with gTLDs referring to the Complainants' core products when selecting the four disputed domain names. The Complainants conclude that, on the balance of probabilities, at the time of registration, the Respondent was aware of the Complainants' trademark rights in the trademark BODUM and its reputation and registered the disputed domain names in bad faith with the intent to create an impression of an association with the Complainants' trademarks.
As to the use of the disputed domain names, the Complainants note that the Respondent is not using them, and asserts that the passive holding of the disputed domain names may amount to bad faith when it is difficult to imagine any plausible future active use of the disputed domain names by the Respondent that would be legitimate and not infringe the Complainants' well-known mark or unfair competition and consumer protection legislation.
The Complainants underline that if a complainant's trademark has a strong reputation and is widely used, the absence of evidence whatsoever of any actual or contemplated good faith use are further circumstances that may evidence bad faith registration and use in the event of passive holding of domain names.
The Complainants further point out that additional circumstances of bad faith can be found in the original registrant's attempt to sell the disputed domain names to the Complainants through the July Letter inviting the second Complainant to contact the Respondent for any questions about their registration, and the changes in the WhoIs information of the disputed domain names made after receipt of the Complainants' letter, which allows the conclusion on balance that the original registrant, together with the Respondent has deliberately tried to evade proceedings by changing the registration, or by what is known as cyberflight. As an additional circumstance evidencing bad faith, the Complainants note that the original registrant of the disputed domain names was a party to a prior UDRP proceeding in which the panel ordered the transfer of the domain names <bialetti.coffee>, <bialetti.cooking> and <bialetti.kitchen> to the corresponding trademark holder. The Complainants conclude that such circumstances indicate that this is apparently the business model of the prior registrant and the Respondent to register domain names which incorporate trademarks and refer to core products of the trademark holders.
The Respondent states that it has a license from the Haitian brand "Bodum" and that said license gives it the right to engage in the Haitian market with the BODUM mark. The Respondent also indicates that, with this, it has sufficiently countered the Complaint, as all the three substantive requirements provided by the Policy have to occur simultaneously.
C. Complainants' Supplemental Filing
The Complainants submitted their Supplemental Filing in reply to the Response, stating that, although the Rules do not expressly provide any right of reply, a reply may be accepted where, like in the present case, the Response raises unexpected factual assertions, i.e., the Respondent's statement that it has a license from the Haitian brand "Bodum".
The Complainants indicate that they have made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names and that, once a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with evidence showing that it does have rights or legitimate interests in the disputed domain name.
The Complainants conclude that the Respondent has failed to meet its burden of adducing evidence to show that it has in fact a license from the Haitian brand "Bodum" and that, in default of knowledge, said circumstance has to be denied.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Preliminary procedural issues:
Consolidation of Complainants
Multiple complainants may bring a consolidated complaint against a single respondent if: (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that affected the complainants' individual rights in a similar fashion; and (ii) it would be equitable and procedurally efficient (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16). The Panel finds that both Complainants have a common grievance against the Respondent, given that both Complainants have an interest in the BODUM trademark, the Respondent has registered the disputed domain disputes identical to the first Complainant's trademark and the second Complainant's trade name, and that it would be equitable and procedurally efficient to proceed to a single decision.
The Complainants' Supplemental Filing
According to the consensus view of the UDRP panelists as summarized in the WIPO Overview 2.0, paragraph 4.2, it is in the panel's discretion whether to accept supplemental filings, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the supplemental filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited filings have also tended to require some showing of "exceptional" circumstances.
The Complainants submitted their Supplemental Filing after the Panel appointment, in which the Complainants alleged that the Respondent had failed to meet its burden of proving that it has in fact a license from the Haitian brand "Bodum" as asserted in the Response.
Since the Complainants could not have been aware of the above-mentioned defense later raised by the Respondent at the time of the filing of the Complaint, the Panel has decided to admit the Complainants' Supplemental Filing (see section 5C above).
In addition, since said Supplemental Filing is limited in scope to a comment that the Respondent's statements in the Response are unsubstantiated, and the Respondent already had a fair opportunity to present its case submitting any documents to substantiate its allegations, bearing also in mind the need for procedural efficiency, the Panel does not deem appropriate to request the Respondent to submit additional comments with regard to the Complainants' Supplemental Filing.
B. Identical or Confusingly Similar
The Complainants have provided evidence of ownership of valid trademark registrations for BODUM, registered in the name of the first Complainant.
The Panel finds that the disputed domain names are identical to the trademark BODUM as they reproduce the trademark in its entirety with the sole addition of the gTLDs ".coffee", ".store", ".kitchen" and ".cooking", which can be disregarded when comparing the similarities between a domain name and a trademark (see Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014‑0206; and Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269).
Therefore, the Panel finds that the Complainants have proven the requirement prescribed by paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainants are required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009‑0701; and WIPO Overview 2.0, paragraph 2.1.
The Panel finds that the Complainants have made a prima facie case. According to the evidence on record, there is no relation between the Respondent and the Complainants and the Respondent has not obtained any authorization to use the Complainants' trademark or to register and use the disputed domain names. In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain names.
The Respondent has not provided evidence sufficient to rebut the Complainants' prima facie case. The Respondent claimed to have "a license from the Haitian brand "Bodum" and that said license would give it "the right to engage in the Haitian market with this mark". However, the Respondent failed to provide any documents or statements to substantiate said allegation and there is nothing in the case file that could suggest that the mentioned license is in fact in place.
Furthermore, the Panel notes that the acquisition of a license of use of a trademark which corresponds to a disputed domain name does not necessarily establish rights or legitimate interests in that domain name for the purpose of the second element of the UDRP, where the overall circumstances demonstrate that such trademark rights were obtained primarily to circumvent the application of the UDRP (see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847; Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., WIPO Case No. D2008-1379; and British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, WIPO Case No. D2009-0817.
In this case, the Respondent is located in the Netherlands, where the Complainants' trademark has a certain reputation, and it is unlikely that the Respondent was not aware of the Complainants' trademark when it registered the disputed domain names and when allegedly it obtained a license to use an identical trademark in Haiti.
The Panel notes that the Respondent's redirection of the disputed domain names, after the notification of the Complaint, to web sites under construction allegedly promoting painting products and services under the mark "Bodum" in Haiti is not sufficient to demonstrate that the Respondent used, or made preparation to use, the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use prior to receiving notice of the dispute. To the contrary, the Respondent's conduct is, in this Panel's view, demonstrative of the Respondent's pretextual efforts to build its defense after having received notice of the dispute.
Therefore, the Panel finds that also the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met.
D. Registered and Used in Bad Faith
The Panel finds that, in light of the prior registration and use of the trademark BODUM by the Complainants, including in the Netherlands, where the Respondent is based, and of the widely known character of the Complainants' trademark in the field of household products, the Respondent's registration of the four disputed domain names identical to the Complainants' mark cannot amount to a mere coincidence.
Indeed, the registration of the Complainants' trademark as domain names in the gTLDs ".coffee", ".store", ".kitchen" and ".cooking", which are descriptive of the Complainants' business, suggests that the Respondent was aware of the Complainants' trademark when it registered the disputed domain names. Additionally, the Respondent contacted the Complainants through the July Letter sent on behalf of the prior registrant (see the discussion on the Respondent's identity below), further suggesting that the Respondent was aware of the Complainants' rights in the BODUM mark.
The circumstances of the case suggest that the Respondent did not register and use the disputed domain names for a legitimate purpose without intent to mislead Internet users and trade upon the Complainants' trademarks, but rather to sell the dispute domain names to the Complainants for a profit.
Shortly after the sending of the Complainants' cease-and-desist letter in reply to the July Letter, the WhoIs records of the disputed domain names were amended, indicating the current Respondent as registrant and a different email address, although the mailing address and phone number remained unvaried. However, since the Complainants submitted evidence showing that the Respondent's name coincides with the name of the prior registrant, notwithstanding the nominal changes in the WhoIs records of the disputed domain names, the Panel is satisfied that the Respondent and the prior registrant are in fact the same entity or, at least, that a clear connection exists between the two entities and the disputed domain names are thus under common control.
The Panel finds that the July Letter sent to the second Complainant concerning the disputed domain names was in all likelihood aimed at obtaining an offer for their transfer to the Complainants. Said circumstance, besides demonstrating the knowledge of the Complainants' trademark, is, in this Panel's view, indicative of the Respondent's attempt to derive profit from the sale of the disputed domain names to the Complainants.
As to the use of the disputed domain names, as indicated in the Factual Background section, they were pointed to mere parking pages before the notification of the Complaint and only thereafter were redirected to web sites under construction promoting purported painting products and services which allegedly would be delivered by the Respondent exclusively in Haiti under the trademark "Bodum", for which the Respondent claims it has a license to use (see section 4 above).
The Panel notes that the circumstances of the instant case and the defenses raised by the Respondent are very similar to the ones described in the decision of Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450, where the respondent asserted it had registered the domain names <bialetti.coffee>, <bialetti.cooking> and <bialetti.kitchen>, corresponding to another well-known trademark in the field of household appliances, to offer paints to consumers in Haiti.
The Panel concurs with the views expressed by the panel in Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, supra, where it found that "even if Respondent had legitimate plans to develop a business in paints in Haiti, there would have been no need for Respondent to register domain names that are identical to Complainant's trademark in gTLDs that relate directly to Complainant's business". In addition, given the notoriety of the Complainants' mark, particularly in the area of business associated with the present gTLDs, the Panel cannot conceive of any plausible use by the Respondent that would not be in bad faith under these circumstances.
Furthermore, the Panel notes that the current use of the disputed domain names, developed after the formal commencement of this proceeding, is also apt to create confusion with the Complainants' trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's web sites and the products and services promoted therein.
In view of the above, the Panel finds that the disputed domain names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <bodum.coffee>, <bodum.cooking>, <bodum.kitchen> and <bodum.store> be transferred to the Complainants.
Date: November 10, 2016